I move amendment No. 9:
In page 4, before section 5, to insert the following new section:
"6.—Section 23 of the Principal Act is amended by substituting the following for that section:
‘23.—(1) The date of filing of a patent application shall be taken to be the earliest date on which the applicant paid the filing fee and filed documents which contain—
(a) an indication that a patent is sought,
(b) information identifying the applicant or information sufficient to enable that person to be contacted by the Office, and
(c) (i) a description of the invention for which a patent is sought even where the description does not comply with other requirements of this Act or with any requirements that may be prescribed, or
(ii) a reference, complying with any relevant requirements that may be prescribed, to a previously filed application made by the applicant or the applicant's predecessor in title.
(2) It is immaterial for the purposes of subsection (1)(c)(i) whether the description of the invention concerned is in, or is accompanied by a translation into, a language accepted by the Office in accordance with any requirements that may be prescribed.
(3) If the Minister prescribes a later date for payment of the filing fee under section 18(3), the date of filing referred to in subsection (1) shall be the date on which the documents referred to in subsection (1) are filed.
(4) Where documents filed at the Office do not satisfy all of the conditions specified in subsection (1), the Controller shall as soon as practicable after the filing of those documents notify the applicant of the further documents required to be filed in order for the application to have a date of filing.
(5) Where documents filed at the Office satisfy all the conditions specified in subsection (1), the Controller shall as soon as practicable after the filing of the last of those documents notify the applicant of—
(a) the date of filing the application, and
(b) the requirements that must be complied with, and the periods within which they are required by this Act or rules made under this Act to be complied with, if the application is not to be treated as having been withdrawn.
(6) If any drawing or a part of a description referred to in the application is filed later than the date of filing accorded to the application by virtue of subsection (1), the Controller shall give the applicant an opportunity of requesting, within the prescribed period, that the date on which the drawing or that part of the description was filed shall be treated as being, for the purposes of this Act, the date of filing the application, and—
(a) if the applicant makes any such request, the date of filing the drawing or that part of the description shall be so treated,
(b) if the request is not made, any reference to the drawing or that part of the description in the application shall be deemed to be deleted.
(7) If any drawing or part of a description referred to in the application has not been filed, the Controller shall invite the applicant to file the drawing or that part of the description within the prescribed period, and—
(a) if the drawing or part of the description is subsequently filed within the prescribed period, the date on which it is filed shall be treated for the purposes of this Act as the date of filing the application,
(b) if the drawing or part of the description is not so filed, any reference to the drawing or part of the description in the application shall be deemed to be deleted.
(8) Where the applicant, subsequent to the date of filing under subsection (1), files a missing part of the description or a missing drawing, subsection (6)(a) or (7)(a) shall not apply where—
(a) on or before the date which is the date of filing the application under subsection (1) a declaration is made under section 26(1) in, or in connection with, the application, and
(b) the applicant makes a request for subsection (6)(a) or (7)(a), as the case may be, not to apply and that request complies with the prescribed requirements and is made within the prescribed period.
(9) An application which has a date of filing under this section or is deemed to have a date of filing accorded to it by virtue of section 24 or 81 shall be treated as withdrawn where any of the following applies:
(a) the filing fee has not been paid within the prescribed period;
(b) one or more claims or the abstract has not been filed within the relevant prescribed period;
(c) where a reference to a previously filed application has been filed as referred to in subsection (1)(c)(ii), the applicant fails to file at the Office—
(i) a description of the invention for which a patent is sought, before the end of the prescribed period,
(ii) a copy of the application referred to, complying with the relevant prescribed requirements, before the end of the prescribed period.
(10) This section applies to patent applications filed on or after the coming into operation of this section.'.".
The purpose of this amendment is to revise section 23 to reflect the requirements of Article 5 of the patent law treaty. Article 5 of the treaty sets out the formal requirements for obtaining a filing date and procedures to avoid loss of the filing date because of a failure to comply with other formality requirements.
Subsection (1) sets out what must be filed for the purposes of obtaining a filing date. Once these documents are filed, a filing date must be accorded. The information to be provided in paragraphs (a), (b) and (c) is broadly the same as in current section 23(1) of the Act. The documents must contain an indication that a patent is sought and they must also contain information identifying the applicant or information sufficient to allow the applicant to be contacted by the office. Paragraph (c)(i) requires that the office must receive disclosure of the invention in the form of a description even if this description does not comply with other requirements in the Act or rules, for example, that this part could be in a language other than English or Irish. Paragraph (c)(ii) provides for the requirement in Article 5 that in lieu of filing a description, the applicant can make reference to a previously filed application. The requirements such as the time limits for filing, certification of the earlier application by the office with which it was filed, if not filed with the Irish Patents Office, translation of the application etc. will be set out in the rules.
Subsection (2) provides that it is not necessary for the description filed under subsection (1)(c) above to comply with the translation requirements as set out in the rules in order to get a filing date, that is, the description to be filed does not have to be in the English or Irish language. However, it will be necessary to file a translation subsequently.
The new subsection (3) regarding payment of fees corresponds to existing section 23(2). It provides that the filing date accorded shall be the date on which the documents set out in subsection (1) are filed. If the Minister prescribes a later date for the payment of the filing fee under section 18(3) and under Article 5, a filing date must be given if documents containing the information in subsection (1) are filed. The documents need not be accompanied by a filing fee. Thus, it will be necessary to prescribe a later date for payment of the filing fee in the patents rule.
Subsection (4) provides that the applicant be notified where an application does not meet the requirements under subsection (1) and applicants must be notified of the additional documents required to be provided in order to be accorded a filing date.
Subsection (5) provides that the applicants must be notified of a filing date once the application has met the requirements under subsection (1). The applicant must be notified of additional requirements to be complied with in order for the application to proceed.
Subsection (6) corresponds to section 23(2) of the principal Act which allows for the late filing of a drawing but to reflect Article 5 it has been expanded to include also the late filing of a part of the description referred to in the application. Under this subsection the controller gives the applicant the opportunity to request that where a drawing or part of a description is filed subsequent to the date of filing, the date of filing be changed to the date on which the part or drawings are filed. If the request is made the filing date is changed. In the absence of such a request, the filing date remains the same while any reference to the later filed part of the description or drawing is deemed to be deleted.
Subsection (7) corresponds to the existing section 23(4) of the principal Act but it has been expanded to include a missing part of the description. The subsection provides that the controller shall invite the applicant to file a missing drawing or part of a description referred to in the application. If, however, it is filed subsequently, its incorporation will incur the penalty that the date of filing must be changed to the date on which the part or drawing is filed. If the drawing or the missing part of the description is not filed, the filing date will remain the same, while any reference to the drawing or part will be deemed to be deleted.
The new section 23(8) provides that where the applicant makes a declaration of priority in connection with an application, where he or she has filed an earlier application, in the State or another state party to the Paris Convention for the Protection of Industrial Property — to be replaced by a reference to the WIPO by the amendment of section 25 of the Act — and a request that the redating referred to in subsections (16) and (17) should not to apply, the date penalty will not apply if the request complies with the prescribed requirements. One of the requirements to be prescribed will be that the missing part of the description or the drawing should be present in the earlier application from which the application in question gains priority.
The new section 23(9) provides that an application can be deemed to have been withdrawn where the filing fee is not paid, requirements in respect of a previously filed application are not met or, as is currently the case, the claims or abstracts are not filed in time.
The new section 23(10) sets out transitional provisions to provide that the section will apply to patent applications filed after the section comes into force.